Federal Circuit Strikes Down Myriad Genetics Method of Screening Claims

Date:  Thu, 2014-12-18

On December 17, 2014, a three judge panel of the Federal Circuit issued a ruling that may significantly narrow the scope of patent eligible subject matter with respect to method claims in the biotechnology field. The unanimous decision, authored by Judge Dyk, held that claims to isolated short primers derived from genomic DNA and certain diagnostic method claims utilizing those primers recited patent ineligible subject matter. Following the Supreme Court’s decision in Association for Molecular Pathology v. Myriad Genetics, which held that Myriad’s patent claims directed to the BRCA1 and BRCA2 genes were directed towards natural products and accordingly were not eligible for patent protection, Myriad filed suit on different BRCA1 and BRCA2 patents against Ambry Genetics. In the decision issued by the Federal Circuit yesterday, captioned University of Utah Research Foundation et al. v. Ambry Genetics Corp, the appellate court applied the Supreme Court’s reasoning in Myriad and in Alice Corp v. CLS Bank Int’l to hold that claims directed towards primers derived from naturally-occurring DNA and methods of diagnosing an alteration in the BRCA1 gene using those primers are ineligible for patent protection.

See more at: http://www.ropesgray.com/news-and-insights/Insights/2014/December/Federa…